263
The Reach of Patent Law
and Institutional Competence
E. Richard Gold*
267
268
271
274
1. JUDICIAL ASSUMPTION OF JURISDICTION
1.1. Statutory Interpretation
1.2. Moral Neutrality
1.3. Necessity of Patent Rights
276
2. REVISIONIST COURTS AND STEALTH LIBERTARIANISM
278
3. LEGISLATIVE COMPETENCE: THE SUPREME COURT
AND THE HARVARD MOUSE
282
4. CONCLUSION
*
Copyright © 2004 by E. Richard Gold.
Director, Centre for Intellectual Property Policy, McGill University.
I wish to thank Sven Poysa for his research assistance in writing this paper, participants at the 7th Annual
Conference of the International Consortium on Agricultural Biotechnology Research in Ravello, July 2003
for comments on an earlier paper and participants at the Comparative IP & Cyberlaw Conference in
Ottawa, October 2003 for their comments on a related presentation. I would also like to thank the members of the Intellectual Property Modelling Group at the Centre for Intellectual Property Policy and the
agencies that provided financing for this work: the Canadian Institutes for Health Research and the Social
Sciences and Humanities Research Council.
265
The Reach of Patent Law
and Institutional Competence
E. Richard Gold
T WO PHENOMENA COINCIDE IN TIME . Through the enactment of the Bayh-Dole
Act, United States policy-makers focused on privatization of university innovation
and technology transfer as central pillars in United States federal research policy.1 At nearly the same time, the United States Supreme Court dramatically
altered its previous attitude toward patent law, ruling that henceforth it would
take a lead role in determining the limits of that body of law.2 While some have
credited these two phenomena for having sparked a biotechnology boom in the
1980s3—a highly dubious proposition factually4—I argue in this paper that they
both result from a more fundamental change: the ascendancy of a libertarian ideology within patent law.5 The ascension of libertarianism as a normative base for
1.
2.
3.
4.
5.
Pub. L. No. 96-517, (1980), 35 U.S.C.A. §§ 200-212 (1984),
<http://www4.law.cornell.edu/uscode/35/200.html> [Bayh-Dole Act].
Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204 (1980),
<http://supct.law.cornell.edu/supct/cases/447us303.htm> [Chakrabarty] (holding that a genetically-modified bacterium was patentable) .
Stacey Berg et al., “PTO Biotechnology Patent Protection Hearing” (1994) 6:11 J. Proprietary Rts. 33 (“The
patent system has played a crucial role in fueling a growing biotech industry since the Supreme Court’s
decision in Diamond v. Chakrabarty…”); Eyal Press & Jennifer Washburn, “The Kept University” The
Atlantic Monthly (March 2000) 39 at 47 (“Walter Powell, a sociologist at the University of Arizona who has
tracked the growth of the biotech industry worldwide, believes that the close links between universities
and industry [due in part to the Bayh-Dole Act] are the principal reasons why U.S. firms now dominate the
biotech market—a lesson America’s competitors are taking to heart.”).
Eyal Press & Jennifer Washburn, ibid. at 54 (quoting from Paul Berg, the Nobel Prize-winning biochemist
who laid the groundwork for DNA splicing, who said, “The biotech revolution itself would not have happened had the whole thing been left up to industry.… Venture-capital people steered clear of anything
that didn’t have obvious commercial value or short-term impact. They didn’t fund the basic research that
made biotechnology possible”).
Peter Drahos explains these developments in terms of the rise of “proprietarianism,” which he describes as
“a creed and an attitude which inclines its holders towards a property fundamentalism.” Peter Drahos, A
Philosophy of Intellectual Property (Aldershot, U.K.: Dartmouth, 1996) at 201. According to Drahos, proprietarianism can arise under a variety of normative theories including certain branches of libertarianism and
utilitarianism. Proprietarianism consists of three beliefs: “a belief in the moral priority of property rights
over other rights and interests, a belief in the first connection thesis [the person with the first connection
with a good ought to have a property right in it] and the existence of a negative commons” (ibid. at 202).
My point here is simpler: that a libertarian ideology has come to replace an approach based on “balance”
formed under utilitarian theories.
(2003–2004) 1 UOLTJ 263
266
university of ottawa law & technology journal
www.uoltj.ca
patent law has brought with it subtle changes over questions such as the institutional competence of courts and the way arguments are put forward to justify the
expansion of proprietary regimes to such informational goods as indigenous
knowledge and genetic resources.6
While these changes are interesting in their own right, so is the manner
in which libertarianism has entered into the discourse: through the back door.
The commonly accepted justification for patent regimes—and to a large extent
other intellectual property regimes—is a utilitarian one: that patents encourage
would-be inventors to take the risk of investing in invention and in publishing the
results of their research.7 Essentially, the social good—here the creation and dissemination of inventions—justifies the award of exclusive rights to inventors. In
other words, we do not grant the rights because of the effort of the inventor or
his or her characteristics or worth; we grant these rights as a means of manipulating the inventor to help us attain the social good.8
Libertarianism, on the other hand, is not premised on attaining the
“social good” but on protecting an individual’s natural right to appropriate
goods, including those of an intellectual variety.9 We ought to protect property
rights, on this view, without regard to what policy-makers view as the overall
public good. A libertarian view of patents is that they ought to be awarded simply because the inventor, through thought and labour, created the invention,
regardless of whether the invention is socially beneficial.10
While utilitarianism and libertarianism will often lead to the same
result—an inventor of a new Christmas tree stand ought to be awarded a patent
right under either justification—they sometimes differ in result, such as when the
public good is best attained by withholding patent rights.11 At this point of conflict, legislatures and courts must make a choice between the social good and the
‘natural’ right.
In this paper I argue that instead of confronting the choice between utilitarianism and libertarianism directly, courts have been dressing their libertarianism in utilitarianism: something I call “stealth libertarianism.” Whether
purposefully or unwittingly, these courts consistently fail to examine what the
6.
7.
8.
9.
10.
11.
Ibid. See, for example, Convention on Biological Diversity, 5 June 1992, 1760 U.N.T.S. 79 (entered into
force 29 December 1993), <http://www.biodiv.org/convention/articles.asp?lg=O&a=cbd-08>, article 8(j) of
which reads as follows: Each Contracting Party shall, as far as possible and as appropriate:
Subject to its national legislation, respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity and promote their wider application with the
approval and involvement of the holders of such knowledge, innovations and practices and
encourage the equitable sharing of the benefits arising from the utilization of such knowledge,
innovations and practices.
Friedrich-Karl Beier & Joseph Straus, “The Patent System and its Informational Function—Yesterday and
Today” (1977) 8 Int’l Rev. Ind. Prop. & C’right L. 387, who conclude that patent systems are justified in
terms of their encouragement of the creation, disclosure, exchange and dissemination of new technical
knowledge [“The Patent System”].
Certain branches of utilitarianism do, as Drahos correctly points out, support a form of proprietarianism in
which property rights are absolute. Drahos, supra note 5 at 201.
Will Kymlicka, Contemporary Political Philosophy: An Introduction (New York: Oxford University Press,
2002) at 110–116.
This is not to deny, however, that certain branches of libertarianism would resist the award of patent rights
on the basis that they involve government interference with the market. In fact, Locke himself may have
been of this view. See Drahos, supra note 5 at 202.
See, for example, Michael A. Heller & Rebecca S. Eisenberg, “Can Patents Deter Innovation? The
Anticommons in Biomedical Research” (1 May 1998) 280 Science 698.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
267
social good is that the patent system ought to seek to attain. Or, more accurately, the courts assume that the social good is attained by expanding patent
rights to all domains, thus ensuring that the answers provided by both a utilitarian and libertarian analysis always coincide.12 Instead of clearly stating that they
are adopting a libertarian analysis of patents, the courts can pretend that they
are actually employing a utilitarian analysis.
This lack of transparency over justificatory theory is not without negative
effects. As we continue to move towards a knowledge-driven economy, judges,
legislators and international bodies face increasing debate and controversy over
the very foundations of that economy: the control over and use of new knowledge and technologies. In distributing decision-making power over new knowledge and technologies, patent rights lie at the core of these debates. Given the
importance of patent rights and the distributions they entail, one would hope
that courts would provide a clear justificatory basis for their decisions.
Unfortunately, this is not the case. By examining judicial determinations of the
appropriate breadth of patent regimes–what Adelman et al. have usefully called
the question of patent eligibility13—I argue in this paper that courts hide beyond
stealth libertarianism to avoid addressing fundamental issues that society faces
with respect to knowledge and innovation. In Part 1 of this paper, I outline the
argument put forward by (mostly US) courts, tribunals and commentators to justify judicial resolution of questions concerning patent eligibility, and then point
out the flaws in that argument. In particular, I point out the ways that current
patent discourse assumes away the ethical and distributional effects of patent
determinations. In Part 2, I discuss why, despite these flaws, courts continue to
take jurisdiction over questions of patent eligibility, although courts had traditionally shied away from making such determinations. I also examine the role that
stealth libertarianism has played in this assumption of power. Finally, in Part 3, I
draw on the 2002 Supreme Court of Canada decision in Harvard College14 to suggest an alternative route, one based on a return to fundamental patent norms.
*
1. JUDICIAL ASSUMPTION OF JURISDICTION
I T IS NOT HARD TO COLLECT judges’ and commentators’ statements that courts
and administrative tribunals are the appropriate bodies to make determinations
concerning patent eligibility. As noted by the Canadian Patent Appeal Board in
1982 after reviewing precedents in Germany, the United States and Australia,
12.
13.
14.
It is at this point that there is a difference between proprietarianism and stealth libertarianism. While utilitarians falling within the proprietarian creed may believe in the primacy of property rights, the question of
which objects fall within property—and by corollary which fall outside—must logically be made on the
basis of something other than a belief in strong property rights. That is, some utilitarians may feel that,
once a good is subject to property rights, those rights ought to be paramount; it is quite something else to
conclude, however, that a particular set of goods ought to be subject to property rights in the first place. A
utilitarian would be expected to offer some justification based on a maximization of utilities to argue for
extending property rights to new sorts of goods.
Martin J. Adelman et al., Cases and Materials on Patent Law (St. Paul, Minn.: West Group, 1998) at 83.
Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76, <http://www.lexum.umontreal.ca/cscscc/en/rec/html/harvard.en.html>, [2002] 4 S.C.R. 45, [Harvard College].
268
university of ottawa law & technology journal
www.uoltj.ca
Throughout the world various judicial bodies, without changes in legislation,
have gradually altered their interpretation of statutory subject-matter to adapt
it to new developments on technologies, and current concepts of industrial
activity. … Whether this was proper without legislative amendment may be
arguable, but on viewing the foment of uncertainty that has been stirred up, we
can no longer be satisfied that at law a patent for a micro-organism or other life
forms would not be held allowable by our own Courts.15
This assumption of jurisdiction was reflected as early as 1970 when the German
Federal Supreme Court, in deciding that animals were in principle patent eligible,
held that determinations of patent eligibility were properly those of the judiciary
even in the absence of legislative change.16 Similar arguments were implicit in the
United States in the famous Supreme Court decisions in Chakrabarty17 and Diehr.18
At its most general, the argument advanced in favour of tribunals assuming jurisdiction over determinations of patent eligibility contends that these
determinations are technical in nature, having to do with whether the claimed
“invention” fits within the traditionally accepted criteria of novelty, inventive step
(non-obviousness) and industrial application (utility).19 This argument appears
straightforward until we unpack the assumptions imbedded within it. When we
do, we see that the argument is, in fact, circular and thus untenable.
If we examine the case advanced in favour of the judicial assumption of
jurisdiction more closely, we see that it relies on three principal sub-arguments. The
first is that the question of patent eligibility is properly one of statutory interpretation. This position is supported by the second sub-argument that claims that determinations of patent eligibility are morally neutral. That is, courts and tribunals are
entitled to approach the issue of patent eligibility as a technical one since such
decisions implicate no fundamental political or moral principle. The third subargument is that courts and tribunals ought generally to support the expansion of
patent law, since patent rights are essential to the continued development of technology-based industries. In other words, courts properly start with a presumption
of patent eligibility, provided traditional patent criteria are satisfied.
I discuss each of these sub-arguments in the next sections.
1.1. Statutory Interpretation
The most promulgated of the three sub-arguments is the first: that determinations of patent eligibility are essentially questions of statutory interpretation.
Ironically, while often stated, the argument is logically flawed in that it presumes
what it seeks to prove.
15.
16.
17.
18.
19.
Re Application of Abitibi Co., (1982) 62 C.P.R. (2d) 81 at 88 (Pat. App. Bd.).
Rote Taube (“Red Dove”), 27 March 1969 decision of the Bundesgerichtshof, 52 Bundesgerichtshof in
Zivilsachen 74, English version available in (1970) 1 Int’l Rev. Ind. Prop. & C’right L. 136 [Red Dove].
Chakrabarty, supra note 2.
Diamond v. Diehr, 450 U.S. 175 (1981), <http://www.oyez.org/oyez/resource/case/1538/> [Diehr] (holding
that a process in which the novel element was the addition of a computer program is patent eligible).
E. Freiherr von Pechmann, “National and International Problems Concerning the Protection of
Microbiological Inventions” (1972) 3 Int’l Rev. Ind. Prop. & C’right L. 295.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
269
The argument was given its strongest form by the United States
Supreme Court in the Chakrabarty decision of 1980. The Court advanced the
argument that, as patents by their very nature cover the unforeseeable, the mere
existence of patent legislation must be taken to mean that everything that could
conceivably be covered by a patent falls within the scope of patent legislation.
The Court formulated its positions in the following language:
This Court frequently has observed that a statute is not to be confined to the
“particular [applications]…contemplated by the legislators.” This is especially
true in the field of patent law. A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that
anticipation undermines patentability.20
Other adjudicators have picked up on this thought. In Europe, the Board
of Appeal under the European Patent Convention followed similar reasoning in
holding that the determination of whether genetically-modified animals were
patent eligible was a matter of technical statutory interpretation. According to
the Board,
the Examining Division did not take duly into account that Article 53(b) EPC
is an exception, for certain kinds of inventions, to the general rule under
Article 52(1) EPC that European patents ‘shall be’ granted for all inventions
which are susceptible of industrial application, which are new and which
involve an inventive step. Any such exception must, as repeatedly pointed out
by the Boards of Appeal, be narrowly construed. The Examining Division has
given no convincing reasons for deviating in this particular case from this principle or interpretation, nor are any such reasons apparent to the Board.21
Similarly, the dissenting opinion of Justice Binnie in the Supreme Court of
Canada’s decision in the Harvard College case followed the same pattern.
Justice Binnie wrote:
The proper question is not whether Parliament intended to include
“oncomice” or “higher life forms” or biotechnology generally in patent
legislation, but whether Parliament intended to protect “inventions” that
were not anticipated at the time of enactment of the Patent Act, or indeed,
at any time before the claimed invention.22
These decisions support the proposition that the determination of
patent eligibility is in essence a technical matter of statutory interpretation.
Despite the centrality of this claim to the judicial assumption of jurisdiction, a
closer examination of its main premises reveals an important logical incongruity.
The argument starts by pointing out that patent acts around the world use the
word “invention” to delimit their scope. That is, all “inventions” are patent eligible. Accordingly, given that legislatures have provided no specific meaning to
the word invention, it becomes a matter of statutory interpretation to determine
20.
21.
22.
Chakrabarty, supra note 2 at 315–316.
Harvard/Onco-Mouse, [1990] E.P.O.R. 501 (Technical Bd. App.) T 19/90 at para. 4.5 [references omitted].
Harvard College, supra note 14 at para. 10 [emphasis added].
270
university of ottawa law & technology journal
www.uoltj.ca
whether particular classes of innovation fall within its meaning. Second, as patent
legislation by its very nature applies to innovations that could not have been conceived at the time that legislation was enacted—otherwise the innovation would
fail to satisfy the requirement of an inventive step or non-obviousness—courts
cannot limit patent eligibility to inventions known at the date that patent statutes
were passed. Third, given this, tribunals conclude that there can be no inherent
limitation to what constitutes an “invention”—or what is patent eligible—under
patent law, unless the legislature specifically states otherwise (as they have, for
example, in Europe with respect to computer programs).23
The flaw in this argument is that while the second proposition is true—
conceivable innovations are not inventive—it does not necessarily lead to the
third. In taking the step from the second proposition to the third—that there can
be no inherent limits to what is patent eligible—tribunals confuse particular innovations with classes of inventions. While it is true that if a particular innovation
had been previously conceivable it is not patentable, it is not true that if a class
of inventions—say transportation devices—are conceivable, then particular transportation devices (provided that the particular device was not conceivable) cannot be patented. In stating otherwise, we mistakenly apply the characteristic
describing the class to particular elements in that class. (Consider, for example,
that simply because the group of vegetarian beef producers is small does not
mean that an individual vegetarian beef producer is also necessarily small). Thus,
while it is true that we cannot read patent statutes as excluding particular patent
claims that were not conceivable when those statutes were enacted, it is perfectly
plausible to read a patent statute as excluding—making patent-ineligible—particular classes of innovation from the scope of the patent statute. Thus, though to
be patentable an invention must be “inventive,” it does not follow that all inventive inventions must be patentable. In asserting otherwise, courts and tribunals
are committing a logical mistake in applying the form of the premise to the conclusion.24 Once revealed, the general argument advanced by tribunals that we
must read legislatures as necessarily having concluded that all new classes of
innovation are patentable falls away. Instead, we must search for a principled way
to determine questions of patent eligibility. On a purely logical basis, it is as correct to claim that the legislature intended that new classes of innovation about
which it could not conceive ought not to be patent eligible as the reverse. That
is, it is impossible to make any definitive statement about the legislature’s real
intention concerning what all agree was something that not only did the legislature not think about but about which it could not have thought.
This problem over determining how the legislature would have acted is
one that plagues not only patent law, but property law in general. We need only
think back to the United States Supreme Court decision in INS v. AP to see the
difficulties of judicial extensions of exclusive rights to new domains.25 In that
23.
24.
25.
Convention on the Grant of European Patents (European Patent Convention), 5 October 1973, 13 I.L.M.
271, <http://www.european-patent-office.org/legal/epc/e/ma1.html>.
This fallacious reasoning is known as “commutation of conditionals.” The error in prepositional logic is evident in the following classic example: To be President you must be over 35. I am over 35 therefore I am
President.
International News Service v. Associated Press, 248 U.S. 215 (1918) [INS].
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
271
case, the Supreme Court was asked to provide exclusive rights to publish news
to one news agency, the Associated Press (“AP”) which could be used to prevent
a rival news agency, the International News Service, from distributing news to its
affiliated papers. The Court agreed to extend these rights to AP on the basis that
they had created economic value in the news through its investment of time and
effort. In a strong dissent, Justice Brandeis noted that the Court was taking a
dangerous step in extending exclusive rights to a new class of goods—news—
without a clear mandate from the legislature.26 He stated that only the legislature, and not the courts, had the institutional competence to consider and weigh
the various social effects of such an extension.27 Given the important public interest imbedded in the war news, he argued that it was inappropriate for the courts
themselves to expand the scope of property rights.28
History suggests that Justice Brandeis, and not the majority of the
Supreme Court, was correct. Today, the scope of the INS case has been severely
limited within the so-called “hot news” doctrine, that sets out important restrictions that the INS facts arguably would not have satisfied.29 Courts have come to
recognize that the blind extension of exclusive rights to cover new classes of
goods over which the public interest was, as noted by Justice Brandeis,
“omnipresent” is inappropriate.30
The question then becomes to what extent do decisions as to the patent
eligibility of genetically-modified organisms, business methods and other new
technologies raise important public interest concerns? This leads us to the second sub-argument advanced in favour of judicial determination of patent-eligibility questions: the assumed moral neutrality of patents.
1.2. Moral Neutrality
As mentioned, the second sub-argument advanced in favour of tribunals taking
jurisdiction over questions of patent eligibility is that such questions do not raise
important social or theoretical issues. That is, the question of patent eligibility
has more to do with the internal technical coherence of patent legislation than
any larger public interest. We can see evidence of this position in the United
States Supreme Court decision in Chakrabarty where the Court held that it was
not open to the Court to decide questions of “high policy” and that it was limiting itself to the morally neutral task of statutory interpretation. The Court went
even further, dismissing the social and ethical importance of a decision to grant
patents over genetically-engineered organisms. According to the majority,
26.
27.
28.
29.
30.
Ibid. at 266.
Ibid. at 264–66.
Ibid. at 263.
The National Basketball Association v. Motorola, Inc., 105 F.3d 841 (2nd Cir. 1997),
<http://laws.lp.findlaw.com/2nd/967975.html>.
Supra note 25 at 262.
272
university of ottawa law & technology journal
www.uoltj.ca
[t]he grant or denial of patents on micro-organisms is not likely to put an end
to genetic research or to its attendant risks. The large amount of research that
has already occurred when no researcher had sure knowledge that patent
protection would be available suggests that legislative or judicial fiat as to
patentability will not deter the scientific mind from probing into the unknown
any more than Canute could command the tides. Whether respondent’s
claims are patentable may determine whether research efforts are accelerated
by the hope of reward or slowed by want of incentives, but that is all.31
Academic commentators seem to agree with this assessment.32 Crespi is perhaps
the most explicit in this respect, stating that, “[p]atenting, as such, is neither
wrong nor right, but could be classed as ‘ethically neutral.’ To refuse a patent
would be a futile gesture that would not by itself stop the invention being put to
practical use.”33
The importance of this isolation of patent-eligibility decisions from ethical concerns is magnified given our recognition, in the previous section, that it is
no more logically sound to conclude that the legislature would have intended to
extend patent eligibility to new classes of innovation than to conclude the opposite. This means that courts and tribunals must make this determination on their
own, without the benefit of legislative intent with respect to the particular technology. As noted by Justice Brandeis in INS, however, since courts and tribunals
ought to be wary about making determinations that involve a complex balancing
of public interests, courts would have to step aside in favour of a legislated solution if decisions of patent eligibility were ethically charged.34 This point was
noted by the Chakrabarty majority as well:
What is more important is that we are without competence to entertain these
[moral and ethical] arguments either to brush them aside as fantasies generated by fear of the unknown, or to act on them. The choice we are urged to
make is a matter of high policy for resolution within the legislative process
after the kind of investigation, examination, and study that legislative bodies
can provide and courts cannot. That process involves the balancing of competing values and interests, which in our democratic system is the business of
elected representatives.35
The problem here is that courts and tribunals cannot evade the ethical and
social implications of their decisions regarding patent eligibility so easily. Claims
that statutory interpretation is ethically neutral have long been suspect within the
31.
32.
33.
34.
35.
Chakrabarty, supra note 2 at 317, [references omitted].
See, for example, R. Crespi, “Biotechnology Patenting: The Wicked Animal Must Defend Itself” (1995) 17
Eur. I.P. Rev. 431; Alison E. Cantor, “Using the Written Description and Enablement Requirements to Limit
Biotechnology Patents” (2000) 14:1 Harv. J.L. & Tech. 267,
<http://jolt.law.harvard.edu/articles/pdf/14HarvJLTech267.pdf>.
R. Stephen Crespi, “Biotechnology Patents and Morality” (1997) 15 Trends in Biotechnology 123.
Supra note 25 at 266.
Chakrabarty, supra note 2 at 317.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
273
law, at least since the days of the Legal Realists.36 Given the vagueness of the term
“invention” and the inherent lack of legislative intent with respect to questions of
patent eligibility for new classes of innovation, courts and tribunals cannot escape
the fact that they are engaging in the very activity that the Chakrabarty court
warned against. As has been pointed out elsewhere,37 the decision to allocate the
right to exclude others from a good has immediate ethical implications. For one, it
shifts the “burden of persuasion” away from the rights holder to those who would
limit the rights holder’s use of the good.38 That is, the mere granting of a right to
exclude brings with it the presumption that the holder of that right should not be
burdened by any restriction on the use of the subject-matter of the right unless
persuasive reasons exist not only (a) to impose restrictions generally but also (b) to
impose the specific restrictions on the rights holder.
This double burden was obvious in Chakrabarty. In that case, scientists,
including Nobel laureates, warned the Court of the potentially harmful environmental and health implications of encouraging research into genetically-modified
organisms.39 In the absence of patent rights, such concerns may have been sufficient on their own to support a legislated moratorium (there was already an informal moratorium) on research until the safety concerns had been investigated and
addressed (which was subsequently done). This changed, however, once the
Court agreed to grant patent rights over genetically-modified organisms. After
the Chakrabarty decision, those concerned about the environment and health had
to not only demonstrate the safety risks but had to argue why those risks were sufficient to outweigh the commercial interests of the patent holder.
Second, the grant of patent rights gives the patent holder the ability to
exclude others not only from the economic benefit of the invention but other
benefits as well. Recent controversies over the effect of gene patents on the
availability of genetic tests illustrate this concern well. To the extent that a gene
patent holder has the ability to exclude others from using that gene for the purposes of conducting a genetic test, the patent holder not only holds the right to
exclude others economically, but also to exclude them from obtaining the most
appropriate type of test technologically available.40 Thus, the patent holder has
rights that effectively go well beyond the economic domain and impinge on
patient autonomy.
36.
37.
38.
39.
40.
It is, after all, exactly this argument that the United States Supreme Court gave in 1856, in Dred Scott v.
John F.A. Sandford (1856), 60 U.S. 393 at 405, to defend the institution of slavery:
It is not the province of the court to decide upon the justice or injustice, the policy or impolicy of
these laws. The decision of that question belonged to the political or law-making power, to those
who formed the sovereignty and framed the Constitution. The duty of the court is to interpret the
instrument they have framed with the best lights we can obtain on the subject, and to administer
it as we find it, according to its true intent and meaning when it was adopted.
See Wendy A. Adams, “The Myth of Patent Neutrality: Patents, Animal Rights and Animal Welfare in
Commissioner of Patents v. President and Fellows of Harvard College” (forthcoming) Can. Bus. L.J.; E.
Richard Gold et al., “Shifting Lenses: Biotechnology Innovation and the Patent System” (2003) Working
Paper, Robert Schuman Centre for Advanced Studies, European University Institute [“Shifting Lenses”].
Joseph W. Singer, Entitlement: The Paradoxes of Property (New Haven: Yale University Press, 2000) at 68.
Supra note 2 at 316.
Richard E. Gold, Timothy A. Caulfield & Peter N. Ray, “Gene Patents and the Standard of Care” (2002)
167:3 Canadian Medical Association Journal 256, <http://www.cmaj.ca/cgi/content/full/167/3/256>.
274
university of ottawa law & technology journal
www.uoltj.ca
All of this leads to the conclusion that, despite judicial and academic
commentary to the contrary, the separation of patent-eligibility determinations
from ethical and social concerns41 ignores the fact that once a class of innovation
is held to be patent eligible, the very framework within which ethical concerns
are addressed is fundamentally altered. This means that courts and tribunals
making patent-eligibility determinations cannot rest on the claim of moral neutrality. In making these determinations, they have the obligation to advance positive reasons to find new classes of innovation patent eligible that overcome or
at the very least accommodate competing ethical concerns. The argument that
courts usually put forward to do this work is that patents are necessary to ensure
the continued development and dissemination of innovation. We thus turn to this
claim next.
1.3. Necessity of Patent Rights
One of the continuing refrains in both the academic and judicial discourse concerning patents is that patent rights are essential to the continued growth of the
industry and that, therefore, all products of value ought to be patent eligible.
Again, Crespi is perhaps clearest on this point:
The value and efficacy of the present patent system to the industries that
translate both academic and industrial research into products that benefit the
public cannot seriously be disputed. The same can be said of private and public funding bodies. We do not need to gather more empirical evidence to
prove what is staring us in the face.42
Despite this refrain, there are both normative and empirical reasons to doubt
its veracity.
From a normative point of view, unless there is a good reason to do
otherwise, all knowledge—including that contained in innovation—ought not to
be subject to exclusive rights.43 The fact that the knowledge has value—to a
person or to an industry—has never been considered a sufficient reason for subjecting that knowledge to exclusive rights. Knowledge about demographics, the
financial results of public corporations or where to locate a store are valuable
and yet not exclusive. Justice Holmes of the United States Supreme Court
noted that courts do not grant exclusive rights over things of value; courts
award exclusive rights where there are specific reasons beyond mere value to
do so.44 Thus, the mere claim of economic value is an insufficient basis on which
to grant patent rights.
41.
42.
43.
44.
See, for example, Stephen Crespi, “Patenting and Ethics: A Dubious Connection” (2003) 85 J. Pat. &
Trademark Off. Soc’y 31; Cantor, supra note 32; Robert P. Merges, “Intellectual Property in Higher Life
Forms: The Patent System and Controversial Technologies” (1988) 47 Md. L. Rev. 1051.
Stephen Crespi, “Models of Intellectual Property” (2002) 20 Trends in Biotechnology 451 at 451.
Edwin C. Hettinger, “Justifying Intellectual Property” (1989) 18 Philosophy and Public Affairs 31.
Supra note 25 at 246.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
275
Second, despite assertions to the contrary, there is no empirical justification for the claim that patents are necessary to increase the level of innovation
in several fields of technology, including biotechnology and computer programs,
or to increase distribution of that innovation to the public.45 As has been pointed
out elsewhere, recent international economic research that takes into account
the differences between the patent systems of different countries casts serious
doubt on earlier work done in single-country closed systems that had concluded
that patents have a positive effect on innovation.46 Further, recent empirical studies on certain biotechnological innovations, such as genetic testing, support the
conclusion that in some areas, patents hinder the development of, and access to,
those innovations.47
None of this argues that there may not be a potential overall positive link
between the award of patent rights and increases in scientific research and dissemination of that research. Further social science research could, for example,
reveal that patents play a crucial role in some or many components of the biotechnology or information technology industries. The difficulty is that with our current
state of knowledge, any such assertion is no more than conjecture. Perhaps if the
patent-eligibility decision were, in fact, ethically neutral, conjecture would be
enough to justify courts and tribunals engaging in patent-eligibility determinations. But given the normative presumption against courts creating new exclusive
rights and the ethical implications of awarding such rights over new classes of
innovation, no contemporary court or tribunal can properly assume to itself this
jurisdiction. The United States Supreme Court in fact, recognized this conclusion
in 1978 in the following terms:
45.
46.
47.
R.K. Burch, P.J.D. Smith & W.P. Wheatley, “Divergent Incentives to Protect Intellectual Property: A Political
Economy Analysis of North-South Welfare” (2000) 3 Journal of World Intellectual Property 169; Amy J.
Glass, “Costly R&D and Intellectual Property Rights Protection” (2000) 19 International Journal of
Technology Management 179; Elhanan Helpman, “Innovation, Imitation, and Intellectual Property Rights”
(1993) 61 Econometrica 1247; Vittorio Santaniello et al., Agriculture and Intellectual Property Rights:
Economic, Institutional and Implementation Issues in Biotechnology (New York: Oxford University Press,
2001); Pamela J. Smith, “How do Foreign Patent Rights Affect U.S. Exports, Affiliate Sales, and Licenses”
(2001) 55 Journal of International Economics 411; Pamela J. Smith, “Patent Rights and Trade: Analysis of
Biological Products, Medicinals and Botanicals, and Pharmaceuticals” (2002) 84 Amer. J. Agr. Econ. 495;
Pamela J. Smith, “Are Weak Patent Rights a Barrier to U.S. Exports?” (1999) 48 Journal of International
Economics 151; W.M. Cohen, R.R. Nelson, & J.P. Walsh, “Protecting Their Intellectual Assets:
Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not)” (February 2000) NBER
Working Paper No. w7552 (Cambridge, MA: National Bureau of Economic Research); Keith E. Maskus,
Intellectual Property Rights in the Global Economy (Washington, D.C.: Institute for International Economics,
2000); Bronwyn H. Hall & Rosemarie Ham Ziedonis, “The Patent Paradox Revisited: An Empirical Study of
Patenting in the U.S. Semiconductor Industry, 1979-1995” (2001) 32 RAND Journal of Economics 101;
Mariko Sakakibara & Lee Branstetter, “Do Stronger Patents Induce More Innovation? Evidence From the
1988 Japanese Patent Law Reforms” (2001) 32 RAND Journal of Economics 77; James Besson & Eric
Maskin, “Sequential Innovation, Patents, and Imitation,” Working Paper No. 00-01 (Cambridge, MA:
Massachusetts Institute of Technology, Department of Economics, 2000), <http://www.researchoninnovation.org/patent.pdf>; Robert Hunt, “Patent Reform: A Mixed Blessing for the U.S. Economy?” Business
Review—Federal Reserve Bank of Philadelphia (Nov-Dec 1999) 15.
See e.g. “Shifting Lenses”, supra note 37; E. Richard Gold et al., “Needed: Models of Biotechnology
Intellectual Property” (August 2002) 20:8 Trends in Biotechnology 327.
Jon F. Merz et al., “Diagnostic Testing Fails the Test: The Pitfalls Of Patents Are Illustrated by the Case of
Haemochromatosis” (2002) 415 Nature 577; Mildred K. Cho et al., “Effects of Patents and Licenses on the
Provision of Clinical Genetic Testing Services” (2003) 5:1 Journal of Molecular Diagnostics 3.
276
university of ottawa law & technology journal
www.uoltj.ca
It is our duty to construe the patent statutes as they now read, in light of our
prior precedents, and we must proceed cautiously when we are asked to
extend patent rights into areas wholly unforeseen by Congress. As Mr. Justice
White explained in writing for the Court:
[W]e should not expand patent rights by overruling or modifying our
prior cases construing the patent statutes, unless the argument for
expansion of privilege is based on more than mere inference from
ambiguous statutory language. We would require a clear and certain
signal from Congress before approving the position of a litigant
who, as respondent here, argues that the beachhead of privilege is
wider, and the area of public use narrower, than courts had previously thought. No such signal legitimizes respondent’s position in
this litigation.48
The traditional approach of courts, as reflected in Parker v. Flook49 and
in the line of cases limiting INS, is that courts should not engage in the balancing of complex public interests without a strong signal from the legislature to do
so. As we have seen, no such strong signal exists with respect to patent-eligibility determinations. Yet courts and tribunals beginning in Red Dove, and continuing through to Chakrabarty and the European Patent Office’s Harvard College
decision, abandoned the traditional approach of judicial caution in favour of the
logically tenuous current approach.
*
2. REVISIONIST COURTS AND STEALTH LIBERTARIANISM
G IVEN THE ABOVE CONCLUSIONS , a narrow, technical approach to questions of
the patent eligibility of new technologies is suspect. The sudden shift in judicial
policy toward the judicial assumption of jurisdiction over what were previously
considered political matters requires explanation. The most likely explanation for
the re-framing of patent-eligibility decisions as a technical question of statutory
interpretation is the advent of “stealth libertarianism.” Recall that libertarianism
holds that the free market is a natural right, so that its distributive results are
inherently just. Unlike its more open variety, I define stealth libertarianism as libertarianism that hides itself as something else. In the area of innovation, stealth
libertarianism cloaks itself in the mantle of utilitarianism.
To fully appreciate this position, we need to supplement our discussion
with a little history. Virtually all English intellectual property law and, apart from
certain aspects of copyright law, the majority of European intellectual property
law rests on utilitarian arguments. Since the beginning of the modern patent age
at the very end of the eighteenth century, countries have premised their patent
laws on maximizing social welfare. The argument has been that patent rights provide an essential set of incentives to encourage innovation50 and disclosure. In
48.
49.
50.
Parker v. Flook, 437 U.S. 584 at 596 (1978), 98 S. Ct. 2522, 57 L. Ed. 2d 451.
Ibid.
“The Patent System,” supra note 7.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
277
other words, the proponents of the regime argue that patent rights are a necessary evil to achieve overall social welfare. The UK Commission recognized this
point on Intellectual Property Rights:
[A]n IP right is best viewed as one of the means by which nations and societies
can help to promote the fulfillment of human economic and social rights. In
particular, there are no circumstances in which the most fundamental human
rights should be subordinated to the requirements of IP protection.51
Stealth libertarians have turned this utilitarian calculus on its head.
Instead of viewing patent rights as a tool to promote social welfare, stealth libertarians depict intellectual property as an end in itself. This inversion is evident
in the hollow manner in which revisionist courts assert the necessity of patent
rights. As noted above, courts merely affirm the desirability of patents: rather
than asking whether and how patent rights actually encourage inventive activity
and dissemination of innovations, courts have simply presumed that they do so
in the absence of, and sometimes against, actual evidence.
This attitude was certainly in evidence in the Chakrabarty decision but
also underlies a significant amount of the discussion of intellectual property on
the Internet and in international trade circles. Additional support for this claim
may be found in the courts’ explicit refusal to consider public policy concerns in
patent-eligibility determinations. In basing their jurisdiction on such false premises as the moral neutrality of patent decisions, the courts shirk their responsibility to ensure that their decisions address the social and ethical context in which
technology presents itself.
The courts’ willingness to abandon their traditional deference to the legislature and to acknowledge that legislatures are better suited to balance social
and ethical concerns arising from the expansion of patent law is illustrated by
one of the key arguments that the United States Supreme Court advanced in
Chakrabarty. There, the Court argued that it should not read limits to the scope
of patent legislation as follows: “We have also cautioned that courts should not
read into the patent laws limitations and conditions which the legislature has not
expressed.”52 The Court cited the case of United States v. Dubilier Condenser
Corp. for this proposition.53 Yet, far from supporting the expansion of judicial
power over patent law, the full quotation from the Dubilier Court actually argues
against the Chakrabarty Court’s conclusion:
51.
52.
53.
United Kingdom, Commission on Intellectual Property Rights, Integrating Intellectual Property Rights and
Development Policy (London: Commission on Intellectual Property Rights, September 2002) at 18,
<http://www.iprcommission.org/graphic/documents/final_report.htm>.
Chakrabarty, supra note 2 at 308.
284 U.S. 178 at 199 (1932) [Dubilier].
278
university of ottawa law & technology journal
www.uoltj.ca
The courts ought not to declare any such policy; its formulation belongs solely
to the Congress. Will permission to an employee to enjoy patent rights as
against all others than the government tend to the improvement of the public
service by attracting a higher class of employees? Is there in fact greater
benefit to the people in a dedication to the public of inventions conceived by
officers of government, than in their exploitation under patents by private
industry? Should certain classes of invention be treated in one way and other
classes differently? These are not legal questions, which courts are competent
to answer. They are practical questions, and the decision as to what will accomplish the greatest good for the inventor, the Government, and the public rests
with the Congress. We should not read into the patent laws limitations and
conditions which the legislature has not expressed.54
The purposeful omission of broader social considerations, coupled with
a blind acceptance of the desirability of patents, belies a hidden libertarian
agenda that favours existing distributions of wealth. In their framing of the internal logic of patent rights, revisionist courts overemphasize the private incentive
aspect of innovation while downplaying the social returns from this innovation. In
the process, they neglect the needs of researchers, the public and lower-income
countries. With increasing frequency, researchers must choose between seeing
their inventions brought to the public through private companies, and preserving their status of being free from conflicts of interest. The general public is seeing its access to the public domain continually diminished by expanding claims
over electronic and biological technologies. Developing nations only barely
gained the ability to secure access to patented health products, such as AIDS
medications.55 In short, the judicial assumption of jurisdiction of patent-eligibility
determinations has permitted a shift in the benefits of new technologies away
from users and lower-income countries in favour of technology producers and
developed countries. This support for the existing distribution of goods underscores the real danger of stealth libertarianism: it couches the increasing divergence between patent law and the values it is meant to protect.
Despite the increasing power of stealth libertarianism, the Supreme
Court of Canada has so far resisted it. As we see in Part 3, the Supreme Court
explicitly rejected the revisionist approach in the Harvard College case56 and
returned to tradition by leaving patent-eligibility determinations to the legislature.
*
3. LEGISLATIVE COMPETENCE: THE SUPREME COURT
AND THE HARVARD MOUSE
THE FACTS OF THE HARVARD COLLEGE CASE begin with research conducted at
Harvard College by Leder and Stewart in the 1980s. These researchers geneti-
54.
55.
56.
Ibid. at 198–199 [emphasis added].
See generally World Trade Organization, General Council, “Implementation of Paragraph 6 of the Doha
Declaration on the TRIPS Agreement and Public Health” 30 August 2003, WTO Doc. WT/L/540,
<http://www.wto.org/english/tratop_e/trips_e/implem_para6_e.htm>.
Harvard College, supra note 14.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
279
cally modified a mouse so that it was more prone to contract cancer.57 As the
modified gene was incorporated into both somatic and germ cells, the mouse
was able to transmit this characteristic to its offspring. The purpose of creating
such mice was to provide a way to test suspected carcinogens as well as suspected treatments for cancer.58
Harvard College applied for a United States patent over geneticallymodified mammals containing an oncogene in their somatic and germ cells. The
United States Patent & Trademark Office granted this patent in 1988.59 Harvard
similarly applied for patents over these mammals at the European Patent Office
and what is now the Canadian Intellectual Property Office. The European Patent
Office, following an appeal by Harvard, issued the patent in 1992.60 Greenpeace
and others filed an opposition that was not resolved until the fall of 2001 when
the Appeal Board upheld the patent but restricted the claims to cover only
rodents, not all mammals.61 In Canada, the patent examiner assigned to the file
rejected the inventors’ claims over the genetically-modified animal in 1993 on
the basis that animals were not patent eligible. The Patent Commissioner and
the Patent Appeal Board in 1995 confirmed this decision. The Federal Court,
Trial Division, rejected the appeal from this decision in 1998, holding that complex life forms are not patent eligible for a variety of technical reasons. The
Federal Court of Appeal reversed this decision in 2000, citing the United States
Supreme Court decision in Chakrabarty with approval.62
At approximately the same time as the Federal Court of Appeal was
considering the Harvard College case, the Canadian Biotechnology Advisory
Committee (“CBAC”), an independent Committee of experts established by the
Canadian government, decided to examine the policies Canada ought to have
with respect to the patenting of higher life forms. CBAC commissioned studies
during 2000 and held stakeholder meetings in 2001 before issuing an interim
report in the fall of 2001. After requesting comments, the CBAC issued its final
report on the subject in June 2002, just after the Harvard College appeal had
been argued before the Supreme Court of Canada but before that Court issued
its decision.63
The CBAC explored the issue of higher life form patents within a broad
policy framework, taking into account the purpose of the patent system, the
needs of Canadian society and ethical concerns. It framed the general purpose
of patent legislation as follows:
57.
58.
59.
60.
61.
62.
63.
Transgenic non-human mammals, European Patent Office Patent Number EP0169672 (1992) [Transgenic
EPO Patent].
Ibid.
Transgenic non-human mammals, United States Patent & Trademark Office Patent Number 4,736,866
(1988).
Transgenic EPO Patent, supra note 57.
Alison Abbott, “Harvard Squeaks Through Oncomouse Patent Appeal” (2001) 414 Nature 241.
Harvard College, supra note 14.
Canada, Canadian Biotechnology Advisory Committee, Patenting of Higher Life Forms and Related Issues
280
university of ottawa law & technology journal
www.uoltj.ca
The patent system…aims at attaining the public good. This matches the principle of justice, which we define in part as “a commitment to ensure a fair
distribution of benefits and burdens.” The patent system attains this goal by
providing inventors with a sufficient incentive—but not more than sufficient—
to disclose their inventions and to make their inventions available to the public. Therefore, except where their grant indicates a lack of appropriate respect
for the subject-matter of the patent right—as in the case of the human body—
patent rights ought not be judged in and of themselves but in terms of their
effects on society as a whole. This involves a balancing of interests of the
various stakeholders in any given field of endeavour such as biotechnology. In
other words, the formulation of patent policy with respect to higher life forms
calls for commitment to justice.64
While finally recommending that higher life forms, other than human
beings, ought to be patent eligible, the CBAC was careful to state that this
should only occur if certain safeguards were simultaneously incorporated into the
Patent Act. That is, the CBAC was adamant that the decision concerning the
patent eligibility of higher life forms be directly linked with the incorporation of
counter-balancing measures within the Patent Act:
We propose a series of recommendations designed, on the one hand, to
extend patent coverage to higher life forms and, on the other, to ensure that
the scope of the patent rights granted is no greater than the patent right
granted over other, non-biological, inventions. In order to achieve this goal, it
is essential that Recommendation 2 [the recommendation that higher life
forms be patent eligible] be read together with Recommendations 3, 4, 5, 10
and 13 (farmers’ privilege, protection for innocent bystanders, research and
experimental use exception, guidelines for biological inventions, and establishment of an opposition procedure).65
The CBAC’s approach to the question of the patent eligibility of genetically-engineered life forms is noteworthy for a number of reasons. By establishing for itself a mandate of studying biotechnology in the context in which it is
developed and used, the Committee was able to look at the social and ethical
environment in which technology operates. Rather than dismissing the social and
moral implications of patent rights as inexistent or irrelevant, the CBAC engaged
in its analysis of patent law with an eye towards the broader considerations
of awarding patents in biological material. In this respect, the CBAC’s report
presents an example of policy makers succeeding where courts and commentators have fallen short.66 That is, revisionist courts neglect the more fundamental
issues posed by new technologies by continuing to ask narrow questions. As
noted in the introduction, responsible regulation of technology involves asking
64.
65.
66.
(Ottawa: Canadian Biotechnology Advisory Committee, June 2002), <http://www.cbaccccb.ca/epic/Internet/incbac-cccb.nsf/vwGeneratedInterE/ah00188e.html>.
Ibid. at 8.
Ibid. at 12.
Other examples of policy-makers outperforming judges and academics can also be found. See, for example, Ontario, Ministry of Health, Genetics, Testing & Gene Patenting: Charting New Territory in Healthcare,
<http://www.gov.on.ca:80/MOH/english/pub/ministry/geneticsrep02/report_e.pdf>; UK Commission on
Intellectual Property Rights, supra note 51.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
281
what constitutes a just distribution of the benefits that this new technology
entails. The CBAC’s report implicitly acknowledges this concern in its balancing
of patent rights against a number of countervailing interests.
Not surprisingly, the CBAC argued that given this need to balance, a
legislated, rather than a judicial, resolution was needed to decide whether higher
life forms are patent eligible. The CBAC’s report states that “[e]ven if the courts
could technically develop answers to what can and cannot be patented and
could formulate the necessary rules to implement that decision, the principles of
accountability and autonomy call for a parliamentary solution.”67
The timing of the CBAC’s report made it eligible for consideration by
the Supreme Court of Canada in the Harvard College case. In fact, in its
December 2002 decision, the majority of the Supreme Court of Canada echoed
CBAC’s argument that a legislated, and not a judicial, solution was needed. Thus,
a majority of five of the Court’s nine members reversed the Federal Court of
Appeal ruling and held that higher life forms—including animals, plants and
seeds—were not patent eligible in Canada.
Unlike their counterparts in the United States and Europe, the majority
in the Supreme Court of Canada took seriously the issue of judicial competence
over determinations of patent eligibility. In reviewing the concerns raised about
the different nature and effect of patents over higher life forms, the majority concluded that determinations of patent eligibility involve a complex balancing of
interests that only the legislature could resolve. In doing so, the majority drew on
the CBAC’s report and its conclusion that patent-eligibility decisions are deeply
interconnected with other changes that need to be made to the Patent Act:
Owing to the fact that the patenting of higher life forms is a highly contentious
and complex matter that raises serious practical, ethical and environmental
concerns that the Act does not contemplate, I conclude that the Commissioner
was correct to reject the patent application. This is a policy issue that raises
questions of great significance and importance and that would appear to
require a dramatic expansion of the traditional patent regime. Absent explicit
legislative direction, the Court should not order the Commissioner to grant a
patent on a higher life form.68
Later in its judgment, the majority was even more explicit about its lack of institutional competence to make determinations of patent eligibility:
As noted above, only Parliament is in the position to respond to the concerns
associated with the patenting of all higher life forms, should it wish to do so,
by creating a complex legislative scheme as in the case of crossbred plants or
by amending the Patent Act. Conversely, it is beyond the competence of this
Court to address in a comprehensive fashion the issues associated with the
patentability of higher life forms.69
67.
68.
69.
Supra note 63 at 7.
Harvard College, supra note 14 at para. 155.
Ibid. at para. 196.
282
university of ottawa law & technology journal
www.uoltj.ca
These quotes emphasize the importance that the Court placed on the
issue of judicial competence. Unlike courts in the United States and in Europe,
the majority recognized that the Patent Act itself was silent on parliamentary
intent and that arguments could be made one way or another about what
Parliament would have done if it had been confronted with the issue of the
patent eligibility of higher life forms. On this point, the majority concluded that
“the respondent’s argument that the object of the Act leads inexorably to the
broadest reading of the definition of invention possible is problematic and is, in
my view, based on an oversimplification of the patent regime.”70 The majority
also recognized that patent-eligibility determinations bring with them important
social and ethical consequences. According to the majority, these included the
rights of farmers to reuse seed and to be free from unintentional patent infringement, the possible inhibiting effect of patents on other research, and the appropriate recognition of the non-patent eligibility of human beings. Taken as a
whole, the majority’s opinion provides a sound critique of the view that courts
are not only competent to make patent eligibility decisions, but that they ought
to exercise that competence by enlarging the scope of patent eligibility as far as
the technical rules of patent law permit.
The Harvard College decision is of particular relevance to developing
countries whose courts have yet to make determinations as to the patent eligibility of the products of biotechnology. By following the example of the Supreme
Court of Canada, courts in these countries may avoid the institutional difficulties
engendered from an overly ambitious enlargement of judicial jurisdiction. The
positive implications of both the majority decision in Harvard College and the
CBAC’s report suggest that, due to their contentious nature, patent-eligibility
determinations must be made within the particular context in which innovation
takes place and is used. Accordingly, the question of whether particular forms of
technology ought to be patent eligible requires a complex balancing of factors
specific to the technology and its application to and effect on society. In representative democracies, only the legislature is institutionally competent to weigh
the competing social policy goals at play in such decisions.
*
4. CONCLUSION
WHILE COURTS HAVE TRADITIONALLY RECOGNIZED the dangers of extending, by
judicial fiat, exclusive rights to cover new classes of innovation, courts and tribunals in the United States and Europe in the 1970s and 1980s rejected this
authority by finding themselves competent to determine which classes of goods
ought to be subject to patent rights. This course of conduct, started in the
United States in the Chakrabarty decision, found its apogee in the Federal Court
of Appeals for the Federal Circuit decision in State Street Bank when the court
found that business methods were patent eligible.71
70.
71.
Ibid. at para. 186.
State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998), 47 U.S.P.Q. 2D
(BNA) 1596 (Fed. Cir. 1998), <http://www.law.emory.edu/fedcircuit/july98/96-1327.wpd.html>.
(2003–2004) 1 UOLTJ 263
Patent Law and Institutional Competence
283
Rather than recognizing that determinations concerning patent eligibility give rise directly to ethical and social consequences, these courts have acted
as if they were simply interpreting positive law. Instead of evaluating the social
good as it relates to new classes of innovation, libertarian courts couch their
desire to grant exclusive rights in utilitarian rhetoric. Unproven pronouncements
regarding the value of patents are used to gloss over flawed logic and unsound
idioms. This presumption of utility (in the sense used in utilitarianism and not
patent law) does more than just tip the scales in favour of patent eligibility. It is
the Trojan horse used by stealth libertarians to impose a libertarian theory of
patent rights.
By obfuscating means and ends, revisionist courts end up assuming what
they set out to determine. This approach allows courts to skirt possible conflicts
between competing policy interests. The utilitarian concern for the social good is
artificially made to coincide with the libertarian belief in natural rights in property.
In this manner, courts justify their technical approach to questions of patent eligibility by creating the appearance of aligned and harmonious policy considerations.
As noted, given the nature and implications of new innovations, such a
narrow approach must be treated with suspicion. If we believe that a just and
responsible distribution of new technologies involves broader considerations—
such as who ought to be able to use the technology, for what purposes and in
what circumstances—we must acknowledge that the question of patent eligibility is not simply technical, but also ethical. Stealth libertarianism then proves
problematic, even dangerous, because it fails to genuinely confront public policy
concerns. The resulting risk is that patent-eligibility determinations will become
divorced from the values that underlie patent law.
Perhaps the most apt antidote to this problem was set out by philosopher Charles Taylor when he asserted:
What our situation seems to call for is a complex, many-levelled struggle…in
which the debates in the public arena interlink with those in a host of institutional settings…and here these disputes both feed and are fed by the various
attempts to define the place of technology and the demands of authenticity
and beyond that, the shape of human life and its relation to the cosmos.72
For lawyers, academics, courts and legislators, this means investigating
the way that the legal system as a whole—from its distributional base in property
law, to its human rights implications in international human rights law—helps to
shape the social, ethical and economic implications of technology. In the end,
given the multiple and multifarious competing interests at stake in determinations of patent eligibility, the judiciary lacks both the capacity and the competence to resolve such issues.
In resisting the revisionist trend, the Supreme Court of Canada’s decision in Harvard College evidences a return to traditional judicial concern over the
appropriate role that courts ought to play in “finding” new exclusive rights. The
Court noted that judiciary and administrative bodies are ill equipped to make
72.
Charles Taylor, The Malaise of Modernity (Toronto: House of Anansi Press, 1999) at 120.
284
university of ottawa law & technology journal
www.uoltj.ca
these determinations. In so doing, the Court reminds us of the need to examine
the purpose of patent legislation and the social context in which it acts.
The decision marks an important step in a return to a more holistic and
responsible approach to new technologies. Patent-eligibility determinations
involve fundamental notions of institutional competence and respect for democratic processes. Given the potential inherent in new knowledge and innovations,
any justificatory theory that rationalizes forms of control and particular distributions must not only be transparent, but constantly re-assessed. We must ensure
that our patent laws both create and reflect desired social outcomes as determined by enlightened and competent authorities. Only in this way can we avoid
the dangers inherent in narrow, technical approaches. Only in this way can we
guarantee a more just use of new technology.